ADMINISTRATIVE PANEL DECISION

Cap Gemini v. Anant Goel

Case No. D2011-1310

1. The Parties

2. The Domain Name and Registrar

The disputed domain name is <capgeminiconsulting.com> which is registered with GoDaddy.com, Inc. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On July 29, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 31, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. On August 24, 2011, the Center received from Respondent’s wife an extension request to file the Response due to exceptional circumstances, and the Center extended the term to file the Response to September 2, 2011. The Response was filed with the Center on September 2, 2011.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 9, 2011. This Panel finds that it was properly constituted. This Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a French company engaged in the provision of professional consulting, technology and outsourcing services.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows:

Complainant was founded in 1967 and has become one of the top companies in the world for its outstanding achievements in providing worldwide clients with professional consulting, technology and outsourcing services.

Since 1976 Complainant started promoting the sign CAPGEMINI as a trademark. Complainant’s trademark has been in use for many years and Complainant has sought trademark protection in most countries.

Complainant is the largest consulting company in Europe, ranking in the top 3 consulting companies worldwide and is established in more than 40 countries with more than 100,000 consultants.

As the actual owner of the trademark, CAPGEMINI CONSULTING.TECHNOLOGY.OUTSOURCING (device), Complainant has spent substantial time, effort and money promoting the Capgemini consulting, technology, outsourcing services worldwide and on the Internet. Complainant launched in November 2010 a global advertising campaign on 100 websites in ten countries, such campaign was viewed more than 270 million times between December 2010 and March 2011.

Complainant’s trademark CAPGEMINI has also accumulated great fame and grown to be a top international brand in the field of consulting, technology and outsourcing services.

Complainant’s trademark CAPGEMINI CONSULTING.TECHNOLOGY.OUTSOURCING is used worldwide for professional consulting in the field of digital economy, strategy, marketing, supply chain and operations, people and technology. Capgemini is also the trade name of Complainant used worldwide since 1996.

The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.

The main element in Complainant’s trademark CAPGEMINI consulting.technology.outsourcing is the term CAPGEMINI, being the terms “consulting.technology.outsourcing” just descriptions of the main branches of the activity of Complainant.

The distinctive element in the disputed domain name is the term, “Capgemini”; the term “consulting” is a mere description of the services provided by Complainant. The dominant element Capgemini associated with the word “consulting” in the disputed domain name reproduces the main element of Complainant’s trademark CAPGEMINI CONSULTING.TECHNOLOGY.OUTSOURCING. Moreover, the addition of the “.com” is non-distinctive because it is a gTLD required for registration of the disputed domain name.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent is making an unfair commercial use of the disputed domain name. There is no plausible explanation for Respondent’s registration of the disputed domain name. Respondent did not have any personal attachment to the disputed domain name.

Respondent is not a licensee of Complainant nor is authorized by Complainant to use its trademarks.

Respondent is using the disputed domain name as a parking website with links to websites of companies providing services which are identical or similar to those provided by Complainant and without Complainant’s authorization.

Further, Respondent is a former employee of Cap Gemini Financial Services USA, Inc., which is corroborated by the online curriculum that can be found at “www.linkedIn.com” (a printout thereof is attached to the Complaint). Many UDRP decisions concerning disputed domain names registered by former employees have considered that respondents had no rights or legitimate interests.

Complainant has searched and found no evidence that may lead to conclude that Respondent has rights or legitimate interests over the disputed domain name as (i) before any notice to Respondent of the dispute, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (ii) Respondent has not been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; and (iii) Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent registered and is using the disputed domain name in bad faith.

According to the Complainant, the disputed domain name is currently displaying links and advertisements that direct visitors to other websites which are in direct competition with Complainant. The disputed domain name contains many links connected to websites active in the field of consulting (printouts of the website associated to the disputed domain name and of the websites associated to such links are attached to the Complaint).

In many UDRP decisions concerning disputed domain names used to post links and advertisements that direct visitors to other websites that are in direct competition with Complainant, it has been considered that the disputed domain name was registered and is being used in bad faith.

Respondent is a former employee of Cap Gemini Financial Services USA, Inc. Many UDRP panels have considered that a former employee registering a domain name identical or similar to his former employer’s trademark acted in bad faith.

The website associated with the disputed domain name displays a link that states “Want to buy this domain? Our Domain Buy Service can help you get it”, which links to a website allowing to make an offer to buy the disputed domain name.

Therefore, by using the disputed domain name, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent’s assertions may be summarized as follows:

Respondent has been engaged in the business of real estate consulting since 1970, such as sale, purchase, investment and leasing of immovable assets, including residential, commercial, agricultural, industrial land and build up properties, including shopping centers, malls, flats, condominiums, kiosks, etc., across India and its regional states.

Respondent initiated a venture: Capital for Growth in Emerging Markets, during Respondent’s stay in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) in early 2008. In mid 2008, Respondent conceptualized the Indian investments chapter for the above venture and acquired the disputed domain name pertaining to the venture concept as following: Capital for Growth in Emerging Markets Indian Investments Consulting as “capgeminiconsulting.com.”

Respondent has been providing the abovementioned consulting services in Indian Investments, and has continued to organically grow his venture under the nomenclature “CAP.G.E.M INI Consulting.”

The disputed domain name is made up of the sum of two distinctive parts of Complainant’s trademark; in fact these subparts (CAPGEMINI and consulting) do not exist together in Complainant’s trademark.

Complainant has not provided any evidence of conducting any services or a relevant trademark present in India. The evidence of services conducted by Complainant is not related to the services being undertaken by Respondent; the real estate advisory and consulting services provided by Respondent do not create any confusion or suggest any intersection with the services being offered by Complainant.

The parking website referred to by Complainant is a generic page created by the Registrar or the ISP for parking domain names, and Respondent has not authorized any such parking page and has no commercial gain or incentives arising out of it as the parking website associated with the disputed domain name clearly mentions, “This webpage is parked for free, courtesy of GoDaddy.com”, thereby such fact reinforces that Respondent is not responsible for any content.

Given the aforesaid, there is no likely to cause confusion, mistake or deception as to the intent and delivery of the services through Respondent’s website. The consumers for Respondent as well as Complainant’s services belong to a very distinct and different set of individuals who would be scouting for non-related services. Moreover, Respondent’s logo leaves no scope of confusion or similar identity.

In March 2011 Respondent left his full time job in the United Kingdom and moved to India to fully focus and expand his venture. As part of these efforts, Respondent has listed website development consultants to work on defining the website structure, create visual designs, define copy and all content, and conduct its implementation. Respondent is using his logo since 2008 when Respondent also acquired the disputed domain name.

The Registrar has posted a generic page for parking domain names, and that has not been discussed with or authorized by Respondent.

Respondent neither claims to be a licensee of Complainant nor is required to be authorized by Complainant to undertake his real estate advisory and consulting services. Respondent does not ascertain his right on the disputed domain name on the basis of being a former employee of Complainant’s financial subsidiary in the United States of America.

Respondent has no commercial gain arising from the disputed domain name as the parking website clearly indicates the origination of the content to be GoDaddy.com.

Respondent intends to use the disputed domain name in support of his venture. Respondent in the past has not shown any intention to sell or auction the disputed domain name, which is not listed on any auction website or up for sale through any medium, any proof relating to the same has not been provided by Complainant.

Respondent has not registered or acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name.

Respondent has invested significant sum of tangible and intangible resources for developing the website pertaining to the disputed domain name. Respondent has not entertained or has been involved in any communication with either Complainant or Complainant’s competitors to sell the disputed domain name.

Respondent intends to keep the disputed domain name on indefinite basis and has instructed the Registrar tor an automatic renewal of the disputed domain name to support his business venture.

Respondent and Complainant are not competitors and the disputed domain name was not registered by Respondent to primarily disrupt Complainant’s business because (i) Respondent’s business of real estate advisory and consulting services does not conflict in any form or manner with Complainant’s business and Respondent has no intention to do so in the future; and (ii) Respondent does not attempt to attract Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, affiliation or endorsement of Respondent’s website or services.

Respondent has no commercial gain or business interests arising out of the parking page and has no intention to use the disputed domain name to create any competition or to confuse Complainant’s consumers.

The link mentioned by Complainant “Want to buy this domain? Our Domain Buy Service can help you get it” is again a generic link provided by the Registrar; Respondent never instructed or has received any communication to sell/purchase the disputed domain name from any party or organization during the tenure of the disputed domain name’s ownership.

Respondent points out the threat to legal action submitted by Complainant before approaching the Center. In response to this, Respondent informed Complainant of being conducting an independent real estate consulting business and has never expressed any interest in any commercial gain or financial settlement from Complainant.

The disputed domain name was neither registered or being used in bad faith by Respondent. Respondent operates a legitimate business that is very different from Complainant’s services with a distinct set of consumers. Moreoever, Respondent has never tried and is not interested in any commercial gain from the disputed domain name, other than to support his business venture.

Respondent requests that the disputed domain name remains registered with Respondent.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the CAP GEMINI (and device) and CAPGEMINI cONSULTING.TECHNOLOGY.OUTSOURCING (and device) marks, among others.

It is well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative, or device elements of a mark.1 This Panel finds that the expression “Capgemini” is undoubtedly the most distinctive part of Complainant’s device marks both visually and phonetically, and that the other words included in one of such marks are descriptive (i.e. the words “consulting.technology.outsourcing”).

The disputed domain name incorporates the mark CAPGEMINI along with the word “consulting” which, although descriptive, is one of the elements of one of Complainant’s marks and corresponds to one of the services provided by Complainant, thus increasing the confusing similarity.2

Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s marks.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is undisputed that Respondent is not a licensee of Complainant and that Complainant has not authorized Respondent to use its marks.

Respondent contends that he has been engaged in real estate consulting since 1970. Respondent advanced no evidence at all showing that in fact he has been engaged in the provision of such real estate consulting services. Even though Respondent asserts that the services conducted by Complainant are not related to the services being undertaken by Respondent (real estate advisory and consulting services) and that such services do not create any confusion or suggest any intersection with the services being offered by Complainant, the evidence in the file shows that Respondent is not using the website associated with the disputed domain name to offer its own services, but rather to show sponsored links and related category links with the name of companies competing with Complainant.

Respondent contends that in 2008 he initiated a venture named “Capital for Growth in Emerging Markets Indian Investments Consulting” and therefore he registered the disputed domain name with such association, which for this Panel is a very weak and unpersuasive explanation for choosing the disputed domain name.

Respondent asserts that since 2008, when he acquired the disputed domain name, he has been using a logo showing: “CAP.G.E.M INI Consulting”

However, Respondent did not produce any evidence showing that such logo has in fact being used since 2008.

Respondent contends that he has invested a significant sum of tangible and intangible resources for the development of a website pertaining to the disputed domain name, and directs to the attachments of the Response being (i) the above mentioned logo, (ii) an allegdelly business card also showing such logo and (iii) a contract dated February 1, 2011 executed by Respondent and Solvonix Technologies for the design and development of a website at the disputed domain name. This Panel points out that such contract is suspiciously dated just the month before Respondent received Complainant’s cease and desist letter dated March 24, 2011, which might convey the impression that it was predated in order to fulfill paragraph 4(c)(i) of the Policy. In any event, Respondent did not provide any other evidence to support his allegations.

It is undisputed that the website associated to the disputed domain name shows links that redirect Internet users to websites of Complainant’s competitors, thus it is of this Panel’s view that Respondent is clearly taking advantage of Complainant’s reputation and the similarity to Complainant’s marks with the purpose of diverting Internet users through such links to other websites unrelated to Complainant’s official website.

Such use of Complainant’s marks by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.3

This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name, and Respondent has not provided enough and adequate evidence to support his allegations.4

Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.

It is undisputed that Respondent was a former employee for Cap Gemini Financial Services USA, Inc., Complainant’s financial subsidiary in the United States of America. Taking into consideration the aforesaid, it is clear that Respondent should have been fully aware of the existence of Complainant, Complainant’s activities and Complainant’s marks at the time it obtained the registration of the disputed domain name.

Respondent asserts that the parking website associated to the disputed domain name is a generic page created by the Registrar and that Respondent has not authorized any such parking page and has no commercial gain or incentives arising out of it. However, this Panel considers that Respondent is responsible for the content appearing on the website associated to the disputed domain name, even if Respondent did not authorize the specific content appearing at such website.5 Further, it may not be necessary for a registrant itself to have profited directly under such arrangement in order to establish bad faith, it would normally be sufficient to show that profit or commercial gain was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.6

The overall evidence in the file shows Respondent’s bad faith registration and use of the disputed domain name, mainly because (i) Complainant’s marks are well known, as evidenced by its prolonged and international use; (ii) Complainant’s marks have been in use and registered for more than 10 years before the disputed domain name was created; (iii) the disputed domain name incorporates another’s mark, coupled with just the addition of a descriptive term directly associated with Complainant’s activities; (iv) the fact that Respondent appears to have worked for a Complainant’s subsidiary; and (v) the fact that the website associated to the disputed domain name shows links to competitors of Complainant. Respondent’s arguments have not convinced this Panel of the opposite, and Respondent did not provide any satisfactory evidence that might lead this Panel to reach a different conclusion.

In light of the above, this Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <capgeminiconsulting.com> be transferred to Complainant.

3 See Pfizer Inc v. The Magic Islands,
WIPO Case No. D2003-0870, where it is established: “The facts that the disputed domain name is confusingly similar with the Complainant’s trademark and is used to sell a competing product in this manner deprive the Respondent’s offering of services of the “bona fide” character required to satisfy Article 4(c)(i) of the Policy.” See also Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc.,
WIPO Case No. D2006-0006.

4 See INTOCAST AG v. LEE DAEYOON,
WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion.”

6 See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912: “Further, the Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” See also McDonald’s Corporation v. ZusCom,
WIPO Case No. D2007-1353: “As noted above, the domain name is ‘parked free’ and used to generate sponsored links or ‘related searches’. Panels have recognized that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy.”